EU: Court takes firm stance on basic European principles and values

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19 October 2018

A declaration of invalidity for EU device mark with word
element 'la mafia - se sienta a la mesa' for goods and services
in Classes 25, 35 and Class 43 lodged by the Italian Republic
was upheld by the Board of Appeal of the EUIPO and confirmed as
contrary to public policy as set out in Article 7(1)(f) of
Regulation No 207/2009, now Article 7(1)(f) of Regulation
2017/1001. The owner of the contested sign filed an appeal
against this decision before the Court of First Instance.

The Court decided that when applying the absolute ground for
refusal, it is necessary to take into account both public
policy and principles of morality common to all member states
of the EU and to the individual member states. The assessment
for the existence of such a ground for refusal must be based on
the standard of a reasonable person with average sensitivity
and tolerance thresholds and cannot be limited to the public to
which the goods and services are directly addressed, as such
signs will also shock other people.

The Court further decided that the Board was right when it
found that the word element 'la Mafia' was the dominant element
in the contested device mark and that they rightly rejected the
applicant's argument that the Mafia is not listed as a
terrorist organisation, since the list of examples provided in
the guidelines is not exhaustive.

The Board also rightly found that the word element 'la
Mafia' in the contested mark would bring to mind the name of a
criminal organisation responsible for particularly serious
breaches of public policy. 'La Mafia' is understood worldwide
as referring to a criminal organisation originating in Italy.
Its criminal activities breach the very values on which the EU
is founded and are a serious threat to the security and
organisation of Italy and the EU.

When a sign is particularly shocking or offensive, it must
be regarded as being contrary to public policy or to accepted
principles of morality, irrespective of the goods and services
for which it is registered. The fact that the purpose of the
registration of the contested mark is not to shock or offend,
but to refer to the Godfather film series, as the applicant
argued, does not alter the fact that the mark is perceived
negatively. Also, no element of the trade mark directly refers
to that series. The fact that there are many books and films on
the subject of the Mafia does not change its bad
reputation.

Finally, the Court found that linking the positive elements
of a red rose (the symbol of love or a spirit of unity) and 'se
sienta a la mesa' ('at the table') could lead to a
trivialisation of the illegal activities of the criminal
organisation and contrast with the violence that characterises
the Mafia's activities.

The fact that there are other brands with the word element
'mafia' does not detract from this conclusion as the legality
of decisions is based on EU law and not on the previous
decision-making practice of the EUIPO or a national trade mark
office.

The Court therefore confirmed the statement from the Board
of Appeal calling for the EUIPO to take a firm stance in cases
that transgress the basic principles and values of European
society and to refuse to register, for breach of public policy,
any trade mark that might be deemed to support or benefit a
criminal organisation such as 'la Mafia'.